Generic or descriptive domains are supposed to be safe from trademark allegations, right? Wrong!
There is always some risk created by contacting trademark holders directly, if for no other reason than you might be hit by a bogus UDRP or ACPA threat. However, you can developing effective language and strategies to reduce your risk of an involuntary transfer. Obviously, arranging a sale of an otherwise non-infringing domains directly to trademark holder give you your best chance of sale at the highest price.
Having your lawyer draft the offer letter can sometimes reduce the risk because the offer letter can establish all the arguments why the UDRP and ACPA are not at issue. Too many lawyers simply have no idea how the UDRP really works and file frivolous UDRP arbitrations our of ignorance. Educating the trademark holder and their attorneys is important, so that they don't make a dumb decision to jump right to the UDRP.
There are also strategies you can put in place on the development side to reduce your risk. Establishing a more definitive non-infringing use by putting content on your web site is perhaps your best protection. Parked pages can, for instance, start serving up ads for hosiery which might raise trademark questions for the trademark holder for "diamonds" (see below)
DIAMONDS Goods and Services IC 025. US 022 039. G & S: Clothing, namely, all kinds of hosiery Standard Characters Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK Serial Number 79023179 Filing Date March 6, 2006 Current Filing Basis 66A Original Filing Basis 66A International Registration Number 0883119 Owner (APPLICANT) FALKE KGaA FALKE Beteiligungs oHG, a German partnership, as general partner LIMITED PARTNERSHIP FED REP GERMANY Oststrasse 5 57392 Schmallenberg FED REP GERMANY Type of Mark TRADEMARK Register PRINCIPAL Live/Dead Indicator LIVE
Parked pages serving up PPC links often become Exhibit A to a UDRP proceeding or ACPA litigation. They always create risk since you have a very limited ability to control what ads are served up. We are currently working with GAP, INC to sell gap.org, a non-profit group called Global Alliance of Performers. The gap.org web site itself establishes the non-infringing use. We made sure that they understood that there are no trademark issues raised by our client's use or, more importantly, our client's attempt to sell.
Anyway, your domain is worth big money. Don't take unnecessary risks. Contact your attorney and invest some money in a strategy which increases your chance of sale by allowing you to go directly to trademark holders and reduces your risk of an involuntary transfer. Good luck!
